WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mark Blanchette, d/b/a Wormtown Trading Co. v. Domain Discreet Privacy Service / wormtown trading co, Gabrielle-Marie Fugere

Case No. D2012-1434

1. The Parties

Complainant is Mark Blanchette, d/b/a Wormtown Trading Co. of Oxford, Massachusetts, United States of America, represented by Diserio Martin O’Connor & Castiglioni LLP, United States of America.

Respondent is Domain Discreet Privacy Service of West Jacksonville, Florida, United States of America and wormtown trading co, Gabrielle-Marie Fugere of Scituate, Massachusetts, United States of America, self-represented.

2. The Domain Name and Registrar

The disputed domain name <wormtown.com> is registered with Register.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2012. On July 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 17, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 20, 2012. On July 17, 2012, Respondent sent three pre-commencement email communications to the Center. On the same date, Complainant sent an email communication to the Center.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2012. Respondent did not file any formal Response, however transmitted an email communication to the Center on July 24, 2012. On August 16, 2012, the Center informed the parties that it would commence the panel appointment process.

The Center appointed Mark Partridge as the sole panelist in this matter on September 4, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant has continually done business as Wormtown Trading Co. since the founding of the company in 1996. Since 1998, Complainant has been the sole proprietor of the business, which organizes, hosts, and advertises concerts and events throughout the U.S. Complainant has continuously used the mark, WORMTOWN TRADING CO., since 1996, although it has never been registered as a trademark.

On August 4, 1998, Complainant purchased <wormtown.com>, through Online Directories, Inc. Complainant was listed as the administrative contact and “Wormtown Trading” was listed as the registrant.

Respondent, Ms. Fugere, was an employee of Wormtown Trading Co. beginning in March 2000. At this time, Respondent and Complainant had a personal relationship and lived together. Respondent never held an ownership stake in the company.

In 2006, Respondent, within her capacity as employee, was instructed to renew the domain registration for <wormtown.com> on behalf of Complainant. Respondent did renew the registration, using Complainant’s company card, but updated the registrant information to include Respondent’s name. Respondent did not inform the Complainant of the change in the domain name registration. In 2009, Respondent ceased working for Complainant.

Complainant did not discover the change in registration until January 2012. At that time “Domain Discreet Privacy Services” was listed as the domain registrant, Respondent having transferred the domain to the privacy service in September 2011. In early July 2012, the domain ceased to resolve to the typical Wormtown Trading Co. homepage and instead redirected to an “Internal Service Error.” From this time forward, Complainant has not had access to add, remove, or otherwise edit the content of the website.

On July 8, 2012, Respondent informed Complainant via email that, “[t]he online auction for the website goes live a week from tomorrow. If you are interesting in bidding, just let me know and I will send you the link to bid.”

On July 16, 2012, following the filing of the Complaint, the domain registration changed again to reflect Respondent as the registrant, not the privacy service, Domain Discreet Privacy Services.

On July 18, 2012, the domain began to resolve to the original Wormtown Trading Co. home page although Complainant was still unable to edit the content on the website.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s WORMTOWN TRADING CO. mark, in which Complainant has common law rights.

Complainant further contends that Respondent has no rights or legitimate interest to the disputed domain name because any interest the Respondent acquired in the disputed domain name was acquired through fraudulent means. Any transfer between Respondent and the privacy service “Domain Discreet Privacy Services” was done without permission or authorization of Complainant. Further, Complainant claims that Respondent has made no genuine attempt to use the disputed domain name in connection with a bona fide offering of goods or services. Respondent has never been commonly know or referred to by the disputed domain name and is not making legitimate noncommercial or fair use of the disputed domain name.

Finally, Complainant contends that Respondent registered and used the disputed domain name in bad faith. Complainant claims that Respondent obtained the disputed domain name through fraudulent means for the purpose of selling or otherwise transferring the disputed domain name registration to Complainant for valuable consideration. As evidence of bad faith use, Complainant points to delays in ascertaining the registrant’s identity and disruption of business, specifically when the disputed domain name resolved to an “Internal Service Error.”

B. Respondent

Respondent did not reply to the Complainant’s contentions by the due date established by the Rules, paragraph 5(a), which was August 13, 2012.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the mark, WORMTOWN TRADING CO., and the disputed domain name is identical to the dominant element of the mark. The mark has become a distinctive identifier associated with Complainant, sufficient to assert common law rights. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.7; see also, e.g., Mancini's Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1036.

The Panel finds that on the evidence submitted Complainant has demonstrated that the mark has acquired distinctiveness from continuous use for more than five years. 15 U.S.C. 1052(f). The mere addition of the “.com” gTLD is not a distinguishing feature. L’OREAL v. Lewis Cheng, WIPO Case No. D2008-0437. When a mark and disputed domain name are substantially identical, no showing of confusion is required.

The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant has made a prima facie showing that Respondent does not have any rights or legitimate interests in the disputed domain name. Respondent is not authorized to use the disputed domain name and is not making a bona fide use in trade as contemplated by paragraph 4(c)(i) of the Policy. Respondent has offered no proof that she has commonly been known by the disputed domain name or that she is making a legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that Respondent lacks any rights or legitimate interests in the disputed domain name and that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

Since leaving Complainant’s company, Respondent’s use of the disputed domain name is indicative of bad faith. However, such bad faith use alone may be insufficient grounds on which to find that Complainant has carried its burden under paragraph 4(a)(iii) of the Policy.

Precedent Regarding the Requirements for “Registration and Use”

“The UDRP does not operate on a strict doctrine of precedent. However, panels consider it desirable that their decisions are consistent with prior panel decisions dealing with similar fact situations.” WIPO Overview 2.0, paragraph 4.1; see, Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011; and Fresh Intellectual Properties, Inc. v. 800Network.com, Inc., WIPO Case No. D2005-0061.

Traditionally, panels have “considered the requirements of ‘registration and use’ to be conjunctive requiring a panel to consider both bad faith first at the date of registration, and to examine whether the respondent’s use was in bad faith. Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688 (“Sporto”). That is to say, Respondent had to evince a bad faith intent at the time of registration, not just subsequent bad faith use. Transfer of a domain name can amount to a new registration. WIPO Overview 2.0, paragraph 3.7; see, International Truck Intellectual Property Company, LLC v. B, BB, WIPO Case No. D2011-0599.

A second line of reasoning has grown from the decision in City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643 (“Mummygold”). This line of cases treats registration and use of the domain in bad faith as a “unified concept.” A panel applying the Mummygold approach “may determine that registration in bad faith under paragraph 4(a)(iii) may be established ‘retroactively’ by subsequent bad faith use.” Eastman Sporto Group LLC v. Jim and Kenny, supra. Some panels have declined to follow the Mummygold approach, choosing to find “registered and used in bad faith” as a conjunctive test, rather than a unified concept. See, Validas, LLC v. SMVS Consultancy Private Limited, WIPO Case No. D2009-1413; and Eastman Sporto Group LLC v. Jim and Kenny, supra.

Renewal

The Sporto decision is instructive in determining when a renewal of a domain name amounts to a new registration. In Sporto, the respondent registered the disputed domain name and used it in connection with training classes offered by the respondent, a decade prior to the complaint. There, complainant was an athletic footwear manufacturer, with marks dating back to the 1960s. By the time of the complaint, the disputed domain name had changed to automatically re-direct to a site offering the complainant’s products for sale. Citing PAA Laboratories GmbH v. Printing Arts America, WIPO Case No. D2004-0338, the Sporto panel recognized that while the original registration was likely made in good faith, “[t]he benefit of an original good faith registration should not be perpetual to the point where it can cloak successors in title and successors in ‘possession' long after the original registration would have expired.” The panel decided that subsequent renewals could have been made in bad faith, as the respondent’s intent had changed over time. The Sporto panel also clarified that treating a renewal the same way as a new registration comports with the language of paragraph 2 of the Policy, and it found that there the respondent’s renewal and use was made in bad faith.

Following the guidance of these prior cases, some UDRP panels have concluded that the “registration in bad faith” requirement may also be satisfied when there is a material change in the registration record made in bad faith, including, for example, changes made as part of a renewal or transfer of an existing registration. The registration requirement should not be interpreted in a way that would frustrate the intent of the Policy by allowing disgruntled employees or others to fraudulently take control of an existing domain name registration by making material changes to the registration record.

Here, when Respondent renewed the registration in 2006, she changed the registrant information and withheld from Complainant that the domain name registration was no longer in his name. In doing so, she effectively took control of the disputed domain name from Complainant. Complainant states that this change was not authorized and was contrary to his specific instructions.

The Sporto panel noted that, “some cases found a transfer of ownership even among related entities to be a new or fresh registration for Policy purposes.” Id., citing, ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., WIPO Case No. D2009-0785. Similarly, here it appears that Respondent in effect executed a change of ownership and control of the disputed domain name in bad faith at the time of renewal by fraudulently changing the registrant information for the disputed domain name.

Coupled with Respondent’s subsequent bad faith use, this dubious renewal is indicative of bad faith intent on the part of Respondent. The Panel finds that this material change in the registration record at the time of renewal is sufficient, in the circumstances of the present cae, to establish registration in bad faith under the Policy.

Bad Faith Use

Respondent’s use of “Domain Discreet Privacy Services” in this case is further indicative of bad faith use. As noted in WIPO Overview 2.0, paragraph 3.9, “[a]lthough use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith.” See, e.g., Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598. Here, Respondent used “Domain Discreet Privacy Services” to conceal her identity and as a vehicle to offer the disputed domain name for sale, which in conjunction constitute indications of bad faith use.

Further, Respondent offered to sell the disputed domain name back to Complainant, indicating in her July 8, 2012, email that, “[t]he online auction for the website goes live a week from tomorrow. If you are interesting in bidding, just let me know and I will send you the link to bid.” Evidence of offers to sell or auction a domain name is often used to show bad faith. WIPO Overview 2.0, paragraph 3.6; see e.g., McMullan Bros., Limited, Maxol Limited, Maxol Direct Limited Maxol Lubricants Limited, Maxol Oil Limited Maxol Direct (NI) Limited v. Web Names Ltd, WIPO Case No. D2004-0078. As noted above, Respondent had no rights or legitimate interests in the disputed domain name, so Respondent’s offer to auction it is, in this Panel’s view, evidence of bad faith use.

Finally, Respondent’s use of the disputed domain name has disrupted Complainant’s business. Complainant has not been able to access or edit the content of the Wormtown Trading Co. website, to which the disputed domain name directs. Complainant is in an industry that requires consistent website updating to stay relevant to consumers. Particularly, if Complainant cannot edit the website, he cannot direct customers to ticketing information and will assuredly lose sales as a result of Respondent’s actions.

As this Panel has held before, the most important grounds for finding that the Respondent acted with bad faith intent are the unique circumstances of the case. Manchester City Football Club Limited v. Vincent Peeris, Renown SC, WIPO Case No. D2009-0686. “The unique circumstances of the dispute need to be examined more deeply to avoid allowing intentional infringement or other deliberate bad faith undermine the intent of the Policy.” Id.

To maintain the intent of the Policy, it is necessary to look at the ongoing intent of the parties to determine whether registration and use were in bad faith and to recognize that each case must be judged on the circumstances at hand.

The Panel finds that here totality of circumstances indicates that Respondent has registered and used the domain in bad faith.

7. Decision

For all the forgoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel finds in favor of Complainant and orders that the disputed domain name <wormtown.com> be transferred to the Complainant.

Mark Partridge
Sole Panelist
Date: September 18, 2012